Thursday, April 1, 2010

Preamble

AMERICAN MEDICAL SYSTEMS, INC. V. BIOLITEC, INC.
  • "[T]here is no simple test for determining when a preamble limits claim scope."
HEARING COMPONENTS, INC. V. SHURE, INC.

  • "A preamble to a claim may or may not be limiting, depending on the circumstances. In considering whether a preamble limits a claim, the preamble is analyzed to ascertain whether it states a necessary and defining aspect of the invention, or is simply an introduction to the general field of the claim. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (quotation marks omitted). A term is often limiting when the patentee has relied on it during prosecution to distinguish prior art, as such reliance demonstrates that the feature disclosed in the preamble is necessary to the patentability of the claim."